The decision of the Federal Court of Justice was based on the following facts:
The applicant is the proprietor of a Union word mark “combit” and of a Union word figurative mark “combit”, each registered for the development, creation, installation, maintenance and rental of data processing programs, installation and leasing of software and hardware, and consultancy in the field of computer hardware and software. The defendant sold a so-called professional service automation software called “commit CRM”. CRM is the well-known abbreviation for “Customer Relationship Management” and was therefore negligible as a descriptive component in the character comparison.
The appellate court (OLG Düsseldorf) was of the opinion that there was a visual and phonetic similarity between the trademark “combit” on the one hand and the challenged designation “commit” on the other hand, even if it was not high. On the phonetic level, it must be borne in mind that, in the pronunciation of the applicant’s mark, there is a lip-shape between the individual syllables, namely at the transition from “com-” to “bit”, which is not the case with the contested designation “commit”. However, that visual and phonetic similarity between the conflicting signs is neutralised by the conceptual content of the contested sign ‘commit’. “To commit’ is part of the basic English vocabulary and means ‘to commit’, ‘to commit’, ‘to commit’, ‘to instruct someone’. “Commitment”, as its abbreviation “commit” could also be understood, means “devotion”, “obligation”, “commitment”, “promise”.
The Federal Supreme Court did not follow this assessment and first explained the principles of the so-called neutralisation theory as follows:
“However, according to the case-law of the Court of Justice of the European Union, in the global assessment of the conceptual, visual and aural similarity of the signs, account must be taken of the fact that the conceptual and visual differences between two signs may neutralise their existing phonetic similarities if at least one of the signs has a clear and specific meaning so that the relevant public can grasp it easily.
According to the Bundesgerichtshof, there was no such clear and definite meaning of the sign ‘commit’ for software which could easily be grasped. The Court of Appeal itself had already stated that the verb “to commit” or the noun “commitment” had several meanings. A clear meaning of this word for software was therefore not ascertainable for this reason alone. The neutralisation assumed by the appellate court was therefore out of the question. Moreover, the lip reshaping correctly accepted by the Düsseldorf Higher Regional Court in pronouncing the action marks “combit” does not argue against the possibility of unclear pronunciation, but in favour of a similarity in phonetic terms.
In the present case, as has been pointed out, the issue was whether a visual or phonetic similarity between the signs could be counteracted by a meaning. The ‘neutralisation theory’ may, however, also be taken into consideration where a phonetic similarity between the signs is neutralised by only a slight similarity or even dissimilarity in the visual impression (see, in particular, ECJ GRUR 2006, 413 et seq. – ZIRH/SIR; GRUR 2008, p. 343 et seq. – Il Ponte Finanziaria Spa v OHIM). For its part, the BGH has dealt with the theory of neutralisation in particular in the “Kappa” case, GRUR 2011, page 824 et seq. In this case, he denied a neutralisation of the phonetic identity of the conflicting signs by completely different figurative elements in any event in the event that the goods in question (in the concrete case: porcelain, suitcases, bags) are not regularly bought only on sight.
It should be noted for the purposes of the case-law in Germany that, in order to assume that the conflicting signs are similar, similarity in one category of perception (visual, phonetic or conceptual) is sufficient (see, in particular, Ströbele/Hacker/Thiering, concerning Paragraph 9 of the Markengesetz, paragraph 268 with further evidence) and that a neutralisation of similarity in one category of perception by the low degree of similarity or dissimilarity in another category of perception can be considered only exceptionally.
